The End of Omnibus Claims

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On 6 April 2017 the UK Intellectual Property Office stopped accepting omnibus claims in pending patent applications.

A picture of the UKIPO offices

Patent applications granted prior to 6 April 2017 will retain their omnibus claims, however it will no longer be possible to amend a granted patent to insert an omnibus claim.

An omnibus claim is a claim including a reference to the description or the drawings without stating explicitly any technical features of the product or process claimed e.g. “An X as hereinbefore described” or “A Y as illustrated in the accompanying drawing”.

An omnibus claim was beneficial in that it provided a fall-back position for applicants for overcoming novelty or inventive step objections while still affording protection to their invention (even though narrowly).

Once an application has been filed, it is no longer possible to add any new information to the application.

The discovery of documentation which predates the effective filing date of the application and renders one or more of the claims unpatentable due to lack of novelty or inventive step is quite commonplace.

It can be quite frustrating to realise, with hindsight, that a differently worded statement or the inclusion of known information in the specification would have provided basis for an amendment to the claims which would have overcome the cited prior disclosures.

With the loss of the safety net provided by omnibus claims, it is even more prudent for applicants to seek professional advice in the preparation of the specification for their application rather than preparing it themselves.

Article Published April 12, 2017